Wednesday, 10 April 2013

UK Divisional Applications - how (not) to get caught out

The UK Patents Act 1977 has a particular, and some may say peculiar, way of dealing with so-called divisional applications (which, for the pedants among you, are not referred to as such in the Act but only by reference to section 15(9); see more on the subject here). For those unfamiliar with UK practice, this might on occasion result in an applicant being caught out while prosecuting a parent application, unaware that the deadline has already passed. Instead of having a (reasonably) clear deadline by which a divisional application must be filed, which at the EPO is the latest of the day before the parent application is granted or the end of 24 months from the earliest relevant examination report (Rule 36 EPC), the UK defines the latest date for filing a divisional application with reference to the compliance period of the parent. Specifically, in the case where an application is not allowed straight away, according to rule 19(3) a divisional application must be filed no later than 3 months before the end of the compliance period. The deadline can therefore easily be missed if the applicant is still trying to get the parent application granted towards the end of the compliance period. Given delays in the UK examination system, it is now quite common to have only 12 months from the date of the first examination report to the end of the compliance period, as a result of the extension allowed under rule 30(1)(b), 9 months of which can easily be used up with only a few rounds of correspondence.

Although the compliance period can be extended as of right by two months under rule 108(2), this is clearly not enough if the compliance date is already less than a month away. In such a case, as further extensions can only be allowed if an as of right extension has already been requested, the applicant has to rely on the discretion of the comptroller. This was the situation for Knauf Insulation's application GB1219243.1, filed out of earlier application GB0807777.8, which resulted in a recent decision from the UK IPO, BL O/098/13. The applicant, as represented by a European attorney based in France, filed the new application after the end of the period under rule 19(3)(b) (3 months before the compliance date), following
several rounds of examination in which various issues including lack of unity
were raised. Shortly after filing the application the applicant requested a
discretionary extension of two months to the compliance period under rule 108(3), but the examiner indicated
that this would not assist because the extension would not bring the date of
filing of the application within 3 months of the extended compliance date, and
discretion to allow the late filing under rule108(1) could only be exercised in exceptional circumstances. The parent
application was then granted, while search and examination of the new
application was deferred pending a decision on whether it could be treated as a
divisional application.

The hearing officer indicated that there were two questions
to be answered, the first being whether discretion should be exercised under rule 108(1) to extend the date by which
the divisional application had to be filed, the second being whether discretion
should be exercised to extend the compliance period under rule 108(3) which, under rule
30(3)(b), determined the compliance period for putting the divisional
application in order. In relation to whether the comptroller's discretion may
be exercised in favour of extensions under rules
108(1) and (3), the hearing officer referred to Ferguson's ApplicationBL O/272/09, which indicated that the test
to allow late filing of a divisional application should be consistent with the
test for exercising discretion to allow a divisional application to be filed
out of time, i.e. that the applicant
needed to demonstrate that the circumstances were exceptional and that the
applicant had been properly diligent.

The hearing officer accepted the arguments put forward by
the applicant that there had been a genuine and serious attempt at all times
throughout prosecution of the parent application to progress the application
through to grant, and that any delay in resolving objections raised by the
examiner was largely inevitable. The circumstances that led the divisional
application to be filed so late were therefore considered by the hearing
officer to be exceptional, and the applicant should not lose out when serious
and consistent attempts had been made to progress the application through to
grant. The hearing officer ordered the compliance period to be extended under rule 108(3), and the period for filing
the divisional application to be further extended under rule 108(1), with the result that the divisional application had
the same compliance date as the parent. A further discretionary extension to
the compliance period would be required to put any amendments into effect,
which the hearing officer indicated would be allowed.

Although the decision in this case came out in favour of the applicant, it is clearly not a process that is easy or cheap to go through and a positive outcome is by no means guaranteed. It does, however, appear that as long as an applicant pursues their parent application diligently, an apparent schoolboy error of missing the usual deadline for filing divisional applications can be forgiven. I am sure that the attorney in this case will not allow the same mistake to happen again, and will be paying more attention in future to the differences between EPO and UK IPO practice regarding divisionals.

About Me

Tufty the Cat is the nom de chat of UK and European patent attorney David Pearce (LinkedIn profile). Anything written by Tufty should not be taken as constituting legal advice, and no responsibility is taken for anything you might do as a result.